OPPOSITION No B 1 850 539

Ginc UK Limited, Courtyard House, The Square, Lightwater, Surrey GU1 85SS, United Kingdom (opponent), represented by Jensen & Son, 366-368 Old Street, London EC1V 9LT , United Kingdom (professional representative)

a g a i n s t

Vipo Land Inc., 32nd East St, No. 3 – 32, Panama (applicant), represented by Tanja Kaus, Gänslerweg 18, 82041 Oberhaching, Germany (professional representative).

On 23/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 850 539 is partially upheld, namely for the following contested goods:

Class 9: Spectacles and sunglasses; life-saving apparatus and instruments; optical apparatus and instruments; contact lenses; data processing equipment and computers; telecommunications apparatus; computer games equipment adapted for use with TV receivers; includes computer hardware and firmware; apparatus for recording, transmission or reproduction of sound or images; computer software (including software downloadable from the Internet); teaching apparatus and instruments; clothing for protection against accident, irradiation or fire.

Class 25: Clothing, footwear, headgear.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; includes hand-held computer games equipment which is self contained (not adapted for use with TV receivers).

2. European Union trade mark application No 9 570 607 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 9 570 607 (word mark Goggs), namely against all the goods in Classes 9, 24, 25 and 28. The opposition is based on European Union trade mark registration No 4 913 505 (word mark ZOGGS). The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

Class 9: Spectacles; sunglasses; goggles; eye masks; frames, cases, chains, ribbons, nose pads, all being for eyewear; optical lenses and apparatus; skiing goggles, safety goggles, motor cycle goggles, swimming goggles; diving goggles; diving masks; float suits for swimming; floats; inflatable jackets and vests for use in underwater swimming; life saving apparatus; floatation aids for swimming, armbands (flotation devices).

Class 25: Articles of clothing, swimwear, beachwear, leisure wear, swimwear, sports clothing, footwear, headgear, swimming caps.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; swimming fins; flippers for swimming; articles for swimming.

The contested goods are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers; calculating machines, data processing equipment and computers; fire extinguishing apparatus; includes computer hardware and firmware; computer software (including software downloadable from the Internet); compact discs; digital music (downloadable from the Internet); telecommunications apparatus; computer games equipment adapted for use with TV receivers; mouse mats; mobile phone accessories; contact lenses, spectacles and sunglasses; clothing for protection against accident, irradiation or fire.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers; includes textile piece goods; textiles for making articles of clothing.

Class 25: Clothing, footwear, headgear.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; includes hand-held computer games equipment which is self contained (not adapted for use with TV receivers).

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘includes’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

Spectacles and sunglasses; life-saving apparatus are identically included in both lists of goods.

The contested life-saving instruments refer to the same goods as life-saving apparatus or overlap with these and are therefore identical.

The contested optical apparatus and instruments overlap with the opponent’s optical lenses and apparatus and are therefore identical.

The contested contact lenses are highly similar to the opponent’s spectacles as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition.

The contested data processing equipment and computers; telecommunications apparatus; computer games equipment adapted for use with TV receivers; includes computer hardware and firmware; apparatus for recording, transmission or reproduction of sound or images are similar to earlier goods games in Class 28 as they usually coincide in producer, relevant public and distribution channels.

The contested computer software (including software downloadable from the Internet) are similar to games as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested goods clothing for protection against accident, irradiation or fire are similar to the opponent’s safety goggles as they usually coincide in producer, relevant public and distribution channels.

The contested goods teaching apparatus and instruments include goods such as information technology and audiovisual equipment. These goods are considered to be similar to the opponent’s games in Class 28 as they usually coincide in producer, relevant public and distribution channels.

However, the remaining contested goods, namely scientific, nautical, surveying, photographic, cinematographic, weighing, measuring, signalling, checking (supervision), apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; calculating machines; cash registers; fire extinguishing apparatus; compact discs; digital music (downloadable from the Internet); mouse mats; mobile phone accessories are dissimilar to all goods of the opponent in Classes 9, 25 or 28. They do not originate from the same companies, are directed at different consumers, have a different purpose and are neither in competition nor complementary.

Contested goods in Class 24

The contested textile goods in Class 24 do not originate from the same companies, are directed at different consumers, have a different purpose and are neither in competition nor complementary to the opponent’s goods in Classes 9, 25 or 28. For these reasons these goods are considered to be dissimilar. In particular they are dissimilar to the goods in Class 25 such as clothing.

The main commonality between textile goods in Class 24 and clothing in Class 25 is that they are made of textile material. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing is meant to be worn by people, or serves as a fashion article, whereas textile goods are mainly for household purposes and interior decoration. Therefore, their method of use is different. Moreover, the distribution channels and sales outlets of textile goods and clothing are different and the relevant public will not think that they originate from the same undertaking. Therefore, textile goods are considered to be dissimilar to clothing (see decisions of 31/05/2012, R 1699/2011-4, GO REBEL (fig.) / GO GLORIA ORTIZ (fig.), § 16; 26/07/2012, R 1367/2011-1, PROMO TEXTILE (fig.) / Promodoro, § 17; 01/08/2012, R 2353/2010-2, Refrigue for cold (fig.) / RefrigiWear (fig.) et al., § 26).

Contested goods in Class 25

Clothing, footwear, headgear are identically included in both lists of goods.

Contested goods in Class 28

Games and playthings; gymnastic and sporting articles not included in other classes are identically included in both lists of goods.

The contested goods includes hand-held computer games equipment which is self contained (not adapted for use with TV receivers) are included in the broad category of the opponent’s goods games and are therefore identical.

However, the contested goods decorations for Christmas trees do not originate from the same companies, are directed at different consumers, have a different purpose and are neither in competition nor complementary to the opponent’s goods in Classes 9, 25 or 28. For these reasons these goods are considered to be dissimilar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical and similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending in particular on the specialised nature, or terms and conditions of the services purchased.

3. The signs

ZOGGS	Goggs
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both signs are word marks. In the case of word marks, the word itself is protected; therefore the use of upper or lower case character is irrelevant.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the German- and English-speaking part of the relevant public since both terms are meaningless in English and German and the Opposition Division considers that this increases the likelihood of confusion between the signs.

Neither of the signs has a meaning for the public at issue and, therefore, their distinctiveness is average.

Visually and aurally, the signs coincide in the sequence of letters/sounds ‘*OGGS’. Both marks have only one verbal element having the same length (five letters). However, they differ in their initial letters/sounds ‘Z’/’G’.

Therefore, the signs are visually and aurally similar to an above average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods compared are partially identical, partially similar (to various degrees) and partially dissimilar. The degree of distinctiveness of the earlier mark is average. The degree of attention of the relevant public may vary between average and high.

The marks are visually and aurally similar to an above average degree on account of the coinciding letters/sounds ‘*OGGS’. The signs have the same length and share four out of five letters placed in the same position. Despite the different letter ‘Z’/’G’ in the prominent position at the beginning of the words, the verbal elements ‘ZOGGS’ and ‘GOGGS’ have more similarities than differences. On the whole, the overall impressions created by the marks are considered to be similar. Therefore, it is considered that the above difference does not outweigh the similarities between the signs. Since the relevant public only rarely has the chance to make a direct comparison between different marks but must rely on the imperfect impression of them retained in his/her memory, it cannot be excluded that the identity of four letters will create in the minds of the public the impression of similarity. It should be noted that the existence of these common characters may prevent the relevant public from clearly perceiving the difference between the signs, which is limited to one letter.

It must be recalled that according to well-established case-law of the Courts, a trade mark must offer a guarantee that all the goods bearing it have originated under the control of a single undertaking which is responsible for their quality. Accordingly, the risk that the public might believe that the goods in question come from the same undertaking or from economically-linked undertakings, constitutes a likelihood of confusion.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of at least the German- and English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Tobias KLEE

Lars HELBERT

Beatrix STELTER

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.